Ex Parte Worcester

Board of Patent Appeals and Interferences

Mar 28, 2011

11117885 (B.P.A.I. Mar. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL S. WORCESTER
____________

Appeal 2010-004783
Application 11/117,885
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-004783
Application 11/117,885

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 19 and 21. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).

Claim 1 is illustrative:
A method of assuring content of a product,
comprising:
identifying a plurality of key elements that
at least partially specify the content of the product;
creating an assessment criteria for each of
said plurality of key elements;
defining a plurality of maturity levels for
each of said assessment criteria that are used to at
least partially assess a maturity of said content;
developing a planned maturity level for each
of said assessment criteria that comprise a
relationship between said maturity of said content
and said plurality of maturity levels;
conducting a plurality of evaluations of said
assessment criteria with at least said planned
maturity level to determine a plurality of metrics
for each of said assessment criteria that at least
partially corresponds to said maturity of said
content;
projecting, by a processor, a future maturity
level based at least in part upon an analysis of at
least one of said plurality of metrics of at least one
of said assessment criteria; and
identifying issues with said content of the
product based at least in part upon said future
maturity level.

Appeal 2010-004783
Application 11/117,885

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Appellant appeals the following rejections:
1. Claim 21 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.
2. Claims 1 to 19 under 35 U.S.C. § 103(a) as unpatentable over Howard
Kakita, et al. Improving Process Maturity to compete in the Desktop
Printer Market, PDMA Visions magazine, 1-8 (Apr. 1998)
(http://www.pdma.org/visions/apr98/yu.html) (last visited Aug. 1,
2007) (hereinafter “Kakita”) in view of Official Notice.
3. Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Kakita in
view Jerzy Nawrocki et al., Extreme Programming Modified:
Embrace Requirements Engineering Practices: Requirements
Engineering, IEEE Joint Int’l Conference on Requirements Eng’g,
303-10 (2002) (hereinafter “Nawrocki”).

ISSUE
Did the Examiner err in finding that Kakita describes the step of
developing a planned maturity level for each of said assessment criteria that
comprise a relationship between said maturity of said content and said
plurality of maturity levels?

ANALYSIS
Indefiniteness
The Appellant has not addressed the rejection of claim 21 under 35
U.S.C. § 112, second paragraph. Therefore, we will summarily sustain this
rejection.
Appeal 2010-004783
Application 11/117,885

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Obviousness
The Appellant argues that Kakita does not disclose the step of
developing a planned maturity level for each of said assessment criteria that
comprise a relationship between said maturity of said content and said
plurality of maturity levels. We agree. The Examiner states at page 18 of
the Answer:
The applicant argues that "planned"
somehow implies or means "forecast" or
"predicted" maturity level, but this argument is
narrower than what the claim actually recites. The
"planned" maturity level is recite[d] as being either
a prediction or a forecast - as per the discussion
above, it comprises nothing more than a
relationship between two things - maturity of
content (implying the actual maturity) and the
plurality of levels. This broad language would be
met by an assertion in the reference that the
maturity of content (or actual maturity) somehow
maps to the plurality of levels (i.e.[,] has a
relationship to). The claim citing a "relationship"
and then citing a difference between actual and this
relationship does not require a forecast or a
prediction. An assessment in detail with respect to
the illustrated metrics in Figure 2 meets the
limitation of identifying a difference between
actual and "planned" where the "planned" is
nothing more than a broad "relationship[."]

In essence the Examiner asserts that a “planned maturity level” does
not relate to a maturity level that is set out in a plan. We agree with the
Appellant that the “planned maturity level” is a maturity level desired to be
achieved in the future according to a plan. We further agree with the
Appellant that the recitation in the claims of a planned maturity level
Appeal 2010-004783
Application 11/117,885

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comprising a relationship does not mean that the planned maturity level is
nothing more than a relationship. The use of the word comprising in the
claim indicates that the planned maturity level is expressed as a relationship
between the maturity of the content and the plurality of maturity levels but
does not negate the recitation that the maturity level is planned.
We find that Kakita does not disclose a “planned maturity level” and
adopt Appellant’s statements in the Brief on pages 18 to 19 as our finding in
this regard.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1, and claims 2 to 12 and 21 dependent thereon. We will also not
sustain the rejection as it is directed to claim 13, and claims 14 to 19
dependent thereon because each of claims 13, 19, and 21 recite a planned
maturity level.

DECISION
The Examiner’s rejection under 35 U.S.C. § 112, second paragraph is
sustained. The Examiner’s rejection under 35 U.S.C. § 103(a) is not
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
Appeal 2010-004783
Application 11/117,885

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DUKE W. YEE
YEE & ASSOCIATES, P.C.
P.O. BOX 802333
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